WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sanofi v. WhoisGuard, Inc. / Daniel Kobelau
Case No. D2019-0717
1. The Parties
Complainant is Sanofi of Paris, France, represented by Selarl Marchais & Associés, France.
Respondent is WhoisGuard, Inc. of Panama / Daniel Kobelau of Moscow, Russian Federation.1
2. The Domain Name and Registrar
The disputed domain name <plavix.network> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2019. On March 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 1, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 4, 2019.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 9, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was April 29, 2019. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on April 30, 2019.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on May 6, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is domiciled in France and ranks among the world’s largest multinational pharmaceutical companies offering a wide range of prescription products, including “Plavix”.
Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation “Plavix”, including, inter alia, the following:
- International trademark (word/device mark) PLAVIX, World Intellectual Property Organization (WIPO), Registration No.: 613041, Registration Date: December 27, 1993, with protection also for the territory of the Russian Federation, Status: active.
- European Union trademark (word mark) PLAVIX, European Intellectual Property Office (EUIPO), Registration No.: 002236578, Registration Date: April 18, 2002, Status: active.
Complainant, furthermore, has evidenced to be the owner of various domain names reflecting its PLAVIX trademark, e.g. the domain name <plavix.com> which was first registered on March 26, 1998.
Respondent, who according to the WhoIs information for the disputed domain name is residing in Moscow, the Russian Federation, registered the disputed domain name on March 16, 2019. As of the time of the rendering of this decision, the disputed domain name resolves to a website at “www.plavix.network” headed “ONLINE MED INFO CENTER” with hyperlinks to a variety of third parties’ websites in the online pharmacy business offering Plavix as well as other pharmaceutical products.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant contends to enjoy worldwide recognition on the pharmaceutical market; its Plavix product is available in over 115 countries worldwide, thus being one of the world’s 10 leading medicines.
Complainant submits that the disputed domain name is at least confusingly similar to Complainant’s PLAVIX trademark as it reproduces the latter in its entirety. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has never licensed or otherwise authorized Respondent to use its PLAVIX trademark or to register domain names including the very same and there is no relationship between the parties whatsoever; (2) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, but on the contrary to run a website displaying the Plavix product along with false, inaccurate and misleading information and redirecting users via hyperlinks to a variety of third parties’ websites in the online pharmacy business offering Plavix as well as other competing pharmaceutical products, thus taking unfair advantage of Complainant’s PLAVIX trademark. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) given the famous and distinctive nature of Complainant’s PLAVIX trademark, Respondent is likely to have had constructive, if not actual notice thereof when registering the disputed domain name, (2) Respondent registered the disputed domain name obviously for the purpose of attracting Internet users to Respondent’s website by creating a likelihood of confusion with the PLAVIX trademark, and (3) Respondent through the disputed domain name is redirecting Internet users to products of competing businesses on the pharmaceutical market, thus for the purpose of disrupting Complainant’s business.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainants, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <plavix.network> is identical with the PLAVIX trademark in which Complainant has rights.
The disputed domain name incorporates the PLAVIX trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11) that the applicable generic Top-Level Domain (gTLD) in a domain name is generally viewed as a standard registration requirement and as such is disregarded under the first element test, though the meaning of such gTLD may be relevant to a panel assessment of the second or third element of the URDP. Accordingly, the existence of the gTLD “.network” does not dispel the finding of identity arising from the incorporation of Complainant’s PLAVIX trademark as such in the disputed domain name.
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s PLAVIX trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “Plavix”. Moreover, Respondent apparently has neither used the disputed domain name in connection with a bona fide offering of goods or services, nor in a legitimate noncommercial or fair manner, but rather to redirect it to a website displaying the Plavix product along with false, inaccurate and misleading information and redirecting users via hyperlinks to a variety of third parties’ websites in the online pharmacy business offering Plavix as well as other competing pharmaceutical products, the obvious purpose being to take unfair advantage of Complainant’s PLAVIX trademark for commercial gain.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Since Respondent has not filed a Response, it has not met that burden.
Therefore, Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Redirecting the disputed domain name to a website displaying the Plavix product along with false, inaccurate and misleading information and redirecting users via hyperlinks to a variety of third parties’ websites in the online pharmacy business offering Plavix as well as other competing pharmaceutical products, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s PLAVIX trademark as to the source, sponsorship, affiliation or endorsement of this website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent made use of a WhoIs privacy shield, apparently in an attempt to conceal its true identity. Also, the Panel has noted that Respondent apparently used false or incomplete contact information in the WhoIs information for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of the Complaint dated April 9, 2019 could not be delivered. These additional facts at least throw a light on Respondent’s behavior which supports the conclusion of a bad faith registration and use of the disputed domain name.
Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <plavix.network> be transferred to Complainant.
Stephanie G. Hartung
Date: May 17, 2019
1 It is evident from the case file that WhoisGuard, Inc. of Panama is a privacy protection service and that Daniel Kobelau of Moscow is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.